GPSolo Magazine - March 2005

Business and Commercial Law This Brand Is My Brand: Litigating Product Image

By Natalie J. Spears and S. Roberts Carter III

What follows are some lessons to consider on your way to the courthouse when litigating a case in which your client’s product and image are at the heart of the matter. When operating in the world of consumer products and images, try not to think like a lawyer all of the time. Use some common sense.

There is a special quality to image-driven product cases, perhaps because they are so tangible and relate to our own everyday lives as consumers. For that reason, using a little practical judgment often is worth as much as the usual fancy surveys and high-priced experts on likelihood of confusion, secondary meaning of trademarks, and the like. We are not suggesting that you throw out the surveys and experts. They have become a necessary by-product of the law in these cases. We simply advise that you should not forget to take a step back and use some good, old-fashioned common sense.

Judges, for example, are consumers just like everyone else. In fact, the judge likely is already familiar with your client’s products or similar products and has a preconceived impression of your client’s image. That is simply human nature. Even if the judge has not previously encountered the product, in the back of her mind, she may well be assessing the product—and the image of the client associated with it—as a potential consumer as well as a jurist. The judge therefore is likely to evaluate the product and your client’s associated image from a slightly different vantage point than in a breach of contract case, an insurance indemnification dispute, or an ordinary business tort litigation.

There even will be times when the judge-as-consumer has an opinion that may reflect equally poorly on both parties’ images. Although the product is beloved to your client, the judge may not think it is the greatest—although most judges are not frank enough to say so. The commonsense moral: In almost all cases, assume from the get-go that the judge may have a negative or blasé view of your claim. To counter it, develop and emphasize compelling facts about, for example, the response of consumers to your client’s product and its importance to your client’s business.

When designing surveys for claim-based advertising and when backing them as scientific proof, consider that the judge likely has consumed the product and, from a consumer perspective, can appreciate and will likely be sensitive to the effects of the surveys’ participants, labeling, presentation, and other aspects. The same can be said of the advertisements themselves. Be realistic and think of the judge as consumer when presenting your case.

One common tool for predicting a judge’s (and jury’s) impression of your client’s product and image is market research. Typically, this means hiring the expert to conduct controlled focus groups or survey testing aimed at getting a finger on the average person’s pulse in reaction to your claims. But market research need not be expensive and time-consuming to be useful.

First, your client already may have some research handy. Before companies go to market with a new product or run a new advertising campaign for an existing product, they often test their themes and product image with focus groups. This research commonly is captured on videotape or at least in written summaries. Even if not directly related to the issues in the litigation, this material may offer tremendous insight into how people feel about the image of or claims about the product.

Second, it is helpful to ask around and learn about other colleagues’ experiences with the product. This research, although not scientific, is often free or at worst pegged at the price of a cup of Starbucks coffee, and it can be extremely helpful in anticipating a judge’s initial human reaction to the product at issue. In some cases, it may even turn into evidence.

Another commonsense tool available is the client’s overall goodwill with the public—its “white hat.” Many consumers feel a special affinity with certain products based on their images in the marketplace. But in a courtroom, the law requires judges and juries to check their preconceived notions and feelings at the door. In cases where a product’s image is not at issue, judges are careful to keep sentimental and irrelevant evidence out of the case. Contrast that with cases where the product’s image is front and center—the opportunities to capitalize on a positive image of your client’s product or a negative image of your opponent’s product are generally fair game. In those cases when both a product and product image are at issue and your client has a stellar image, use it to your advantage and, perhaps most important, keep it intact. Avoid making decisions in the litigation that tarnish the image. Examples include overly aggressive, Terminator-style discovery tactics or even sloppy discovery productions that can result in contempt proceedings. All of this can engender a negative opinion of the client.

Nowhere is the image of a product or service more in play than in a trademark dilution case. Owners of famous trademarks for their products are protected by the Federal Trademark Dilution Act against use of the same famous mark by third parties on noncompeting products. Although such third-party use is not likely to confuse consumers or constitute traditional trademark infringement, it can diminish the ability of a famous mark to distinguish the product. Depending on the nature of the third-party product, that use also can tarnish a famous mark by a negative, illegal, immoral, or controversial association.

The Supreme Court’s decision in the Victoria’s Secret case put a damper on federal trademark dilution protection. The Court imposed a higher burden that requires famous owners to prove “actual dilution” as opposed to a “likelihood of dilution” from the third parties’ trademark use. Trademark dilution claims, however, still are viable. Since that decision, some lower courts have accepted arguments to maneuver around the actual dilution standard. In particular, where identical marks are at issue, some courts have allowed circumstantial evidence of dilution in place of direct evidence. Also, do not forget the possibility of ancillary state law dilution claims, which often have lower burdens of proof on various elements.

Another potentially overlooked innovation in product-image litigation is your own computer software. These cases require eye-catching visual depictions of the brands and images at issue. Now, you can embed images directly in the pleadings themselves. Why wait for the exhibit at the end of the document when images can be dropped in right next to the sentence that says, “The defendant’s trademark substantially copies the plaintiff’s mark”?

The courts also have access to high-level computer technology. For image-driven product cases, and especially in cases involving television or radio commercials, go ahead and submit pleadings the old-fashioned way, but consider also submitting them on CD-ROM. This technology allows the reader to double-click easily and link directly to evidence of the various images, video, and audio referenced in the pleadings.

Natalie J. Spears is with Sonnenschein Nath & Rosenthal LLP in Chicago; she can be reached at nspears@sonnenschein.com. S. Roberts Carter III is a law clerk to the Hon. Joan B. Gottschall in the U.S. District Court for the Northern District of Illinois.
For More Information about the Section of Litigation

- This article is an abridged and edited version of one that originally appeared on page 31 of Litigation, Winter 2005 (31:2).

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